- Published: 15 August 2016 15 August 2016
By Adam J. Smith, Assoc. Atty, Standley Law Group LLP
Understanding Pre-Issuance Damages Under 35 U.S.C. §154(d) in View of Rosebud LMS Inc. v. Adobe Systems, Inc.
The Federal Circuit recently ruled on the relatively little-used provision of pre-issuance damages under 35 U.S.C. §154(d). This rarely asserted and rarely granted "extraordinary remedy" gives patent applicants the right to collect a reasonably royalty based on infringement that occurred following the publication of a patent application where the accused infringer is provided "actual notice" of the published patent application, and the asserted claims remain "substantially identical" between publication and issuance.1
35 U.S.C. §154(d) was passed as part of the Domestic Publication of Foreign Filed Patent Applications Act of 1999. As it generally takes several years for claims to accrue under a new law and several more years for those claims to progress through the court system, the Federal Circuit has had few opportunities to opine on §154(d) until recently.